1

Does the wording

...(accomplishing something) by, inclusively, either of 
   [option 1 description]; or
   [option 2 description]

(– and conceivably, extendable to any number of additional elements, with a change of "either of" to "any of")

serve the same purpose, with adequate clarity, as

...(accomplishing something by a means) selected from the group consisting of: 

       a) [option 1 description];
       b) [option 2 description];
       c) combinations of any elements comprising those set forth in 
          (a)-(b),  inclusive

(– and conceivably, extendable to any number of additional elements with corresponding lettered ordering)

2
  • 1
    Avoid the use of "means" unless you really know what it means and intend the precise meaning it has in patent law.
    – George White
    Feb 17 '20 at 6:00
  • I am not actually using the word "means" in the final wording of the claims. But other than this point, do the overall construction of these two different wordings both accomplish the same thing?
    – Charles
    Feb 17 '20 at 13:43
2

The words "comprising" to refer to an open list and "consisting of" to refer to a closed list are terms with well-settled meaning in patent law. Perhaps the term "inclusive" has well recognized meaning in chemical or pharmaceutical technologies. In my drafting for high-tech, I would avoid using the term "inclusive" to bound a list.

If I was sued over a claim phrased as in either example, unless the specification made it very clear, I might use the possible ambiguity to argue for a claim construction that disfavors the patent.

The words "either... or" in the first example is somewhat dangerous. If infringement requires practicing option 1 or option 2, then surely avoiding infringement requires not practicing option 1 or option 2. Therefore, as long as the accused product doesn't do both, the defendant can argue non-infringement. The argument might not win, but it can run up the legal bills. For that reason, the second phrasing is probably better than the first.

Some practitioners never use the word "or" in a patent claim.

The approach I would take is to split it into multiple claims, one for each option in the list. Having a large number of claims might require paying an extra fee. However, in the lifetime costs of a strong patent, those excess claims fees are very little.

1

Either could work and either could be screwed up. From "accomplishing" I get that you are specifying actions or steps in a method claim but from "combinations of any elements comprising those set forth in (a)-(b)" it looks like we are talking about a thing, not an action.

"As set forth" seems odd and "inclusive" is used to indicate the endpoints of a range are part of the claimed range as in "cobalt and mixtures thereof and x, y, and z range from 0 to 8, inclusive); an aluminum transition metal". If (a) through (b) are individual actions or things it doesn't make sense to say inclusive.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.